Claim 1 of letters patent No. 273,569, granted to Charles
Marchand, March 6, 1883, for an improvement in the manufacture of
hydrogen peroxide, namely,
"1. The method of making hydrogen peroxide by cooling the acid
solution, imparting thereto a continuous movement of rotation, as
well in vertical as in horizontal planes -- such, for example, as
imparted by a revolving screw in a receptacle -- and adding to said
acid solution the binoxide in small quantities while maintaining
the low temperature and the rotary or eddying movements,
substantially as described,"
is invalid as not covering any patentable subject matter.
In equity for the infringement of letters patent. Decree
dismissing the bill. Plaintiff appealed. The case is stated in the
opinion.
MR. JUSTICE BLATCHFORD delivered the opinion of the Court.
This is a suit in equity, brought in the Circuit Court of the
United States for the Southern District of New York by Charles
Marchand against Frederick Emken to recover for the infringement of
letters patent No. 273,569, granted to the
Page 132 U. S. 196
plaintiff March 6, 1883, for an improvement in the manufacture
of hydrogen peroxide.
The specification says:
"This invention has reference to the manufacture of hydrogen
peroxide, or oxygenated water, by addition of barium or calcium
binoxide to an acid, (sulphuric, nitric, acetic, oxalic,
hydrochloric, hydrofluoric, hydrofluousilic, and the like), the
binoxide having been mixed with water. Heretofore hydrogen peroxide
has been made by adding the barium or calcium binoxide, mixed with
water, to the diluted acid, the binoxide being added from time to
time in small quantities, the vessel in which the operation is
conducted being set in a refrigerating medium, and the liquid being
agitated or stirred to facilitate the reaction. The stirring has
been performed by hand. The present invention is based on the fact
or discovery that the reduction of the barium or calcium binoxide
takes place under conditions much more favorable in point of
rapidity and yield when the acid to be neutralized is given a
movement of rotation, both vertically and horizontally, by a screw
or other suitable means, which at the same time creates both
constant and ever-changing eddies, the said movement of rotation
being imparted continuously during the addition of the binoxide.
The present invention consists, therefore, first in imparting to
the acid a movement of rotation, the time required for the chemical
reaction being thereby lessened, while the reaction itself is more
complete."
The specification gives a description of the apparatus which it
says is preferably to be employed, and forms part of the invention,
in substance as follows: there is a receptacle for the acid, and a
jacketing vessel, in which the receptacle rests, for containing the
refrigerant or cooling medium. There is a rotating screw and a
vertical power shaft. The acid receptacle need not be any
particular size, but a good capacity is from five hundred to one
thousand gallons. It is preferably hemispherical, but may be
cylindrical, frustoconical, or of other suitable form, and it is
made of or lined with material adapted to resist the action of the
acid. For use with hydrofluoric acid a sheet iron, or, better, a
copper, vessel lined with lead may be used, or one of platinum,
gold, or silver, or one
Page 132 U. S. 197
otherwise rendered noncorrodible. The screw is provided with
helicoidal blades, ordinarily two, three, or four in number, set
obliquely on the arbor or screw shaft. The blades are preferably
pierced with holes. The screw is suspended in the receptacle, being
detachably connected with the lower end of the power shaft by two
pieces, one fixed to the power shaft, and the other to the screw
shaft, and clamped together by bolts. On the screw shaft, above the
top of the receptacle, is fixed a disk of wood or other suitable
material, which catches the oil from the bearings of the power
shaft, and other foreign matters that otherwise would be liable to
fall into the receptacle. The power shaft is suspended in its
bearings by suitable collars, which enable it to support the screw,
and is driven from a horizontal shaft through beveled gearing or by
other well known or suitable mechanical means. The length of the
screw shaft is such that the blades of the screw do not in
operation touch or scrape the interior of the receptacle. The
jacketing vessel is of ordinary or suitable construction. The
cooling medium commonly employed therein may be placed in it. The
vessel being filled with the cooling medium, the proper quantities
of acid and water (say twenty parts, by weight, of acid to one
hundred parts of water, or other suitable proportions) are placed
in the receptacle. The screw is put in motion, and the binoxide of
barium or calcium, in the state of a more or less thick emulsion or
milk, is added in small quantities. The revolving screw imparts a
movement of rotation more or less rapid to the liquid, producing
eddies therein, and constantly changing the material, and the
chemical reaction takes place very regularly and completely.
Sufficient binoxide is added to secure the complete neutralization
of the acid without rendering the hydrogen peroxide too alkaline.
After a certain time, which varies with the quantity of the article
manufactured and the amount of binoxide employed, and during which
the screw may be stopped, but is preferably kept in revolution, the
production of the hydrogen peroxide is finished. It only remains to
allow the matters in suspension to settle and to decant the clear
liquor. If it is desired to obtain the hydrogen peroxide
Page 132 U. S. 198
in a state of greater purity than results from the above, the
clear liquor is subjected to special chemical treatment, which, as
it constitutes no part of the present invention, is not
described.
Only the first claim of the patent is involved in this suit.
That claim reads as follows:
"1. The method of making hydrogen peroxide by cooling the acid
solution, imparting thereto a continuous movement of rotation, as
well in vertical as in horizontal planes -- such, for example, as
imparted by a revolving screw in a receptacle -- and adding to said
acid solution the binoxide in small quantities, while maintaining
the low temperature and the rotary or eddying movements,
substantially as described."
The answer sets up, among other defenses, that the alleged
invention and patent do not contain any patentable subject matter.
After a replication, proofs were taken, and, on a hearing, the
court, held by Judge Coxe, entered a decree dismissing the bill,
with costs. From this decree the plaintiff has appealed. The
opinion of the court is found in 26 F. 629.
It appears from the record that the first claim was three times
rejected by the Patent Office, and was then, on appeal, allowed by
the examiners in chief, who said in their decision:
"In the present case, the essence of the invention resides in
imparting to the liquid, while making hydrogen peroxide as above, a
peculiar motion -- one which cannot be given by hand; a continuous
movement of rotation, horizontally in opposite directions from the
center, or radially and vortically, or nearly so, according to the
shape of the vessel; a vortical motion designated in German as
wirbelbewegung -- the movement of a smoke ring -- making
what may be termed a 'ring vortex.'"
They suggested an amendment to the specification to make it
clear that the invention was
"no more than in this particular art, all the other steps being
old, imparting to the liquid undergoing chemical change this old
motion, this motion produced, for example, by the eggbeater."
The opinion of the circuit court says:
"It is not pretended that the complainant discovered hydrogen
peroxide, or the
Page 132 U. S. 199
method of adding barium, mixed with water, from time to time to
the diluted acid, or the necessity for stirring or agitating the
liquid. Neither did he invent the obliquely bladed screw, the
hemispherical receptacle, the jacketing vessel, or any part of the
apparatus described in the specification. All this was old and well
known. The patent itself illustrates how extremely circumscribed
was the theater of invention."
It then refers to the fact that the descriptions, in the
specification, of the prior process and of the patented process are
substantially the same, except that in the former, the stirring was
performed by hand and in the latter it is performed by machinery.
The opinion then proceeds:
"The question, then, seems to be narrowed down to this: does it
constitute invention to stir, by a well known and simple mechanical
device, what had before been stirred by hand? The complainant
desired to manufacture in large quantities what had before been
produced chiefly in the laboratory. He knew how hydrogen peroxide
had been made; every step in the formula was familiar. A mixture
that needed stirring, and a vessel provided with a revolving
stirrer, were ready at his hand. He put the former into the latter.
This was all. The object of agitating the liquid while making
hydrogen peroxide is to keep the barium, which is three times as
heavy as water, suspended in the acid so that its particles may
come in contact with the particles of acid. Whether they come in
contact while going round, rising, settling, or remaining
stationary can make no difference. Divest the case of the air of
mystery with which it is environed and it seems simple enough. The
complainant's predecessors knew that to keep the barium up in the
solution, they must stir it. The complainant knew this. Unlike
them, however, he manufactured on a scale large enough to make it
essential to employ a power shaft. The car-shaped sticks which
formerly went round and round by hand now go round and round by
machinery."
The court then refers to the contention of the plaintiff that,
by the method set out in the patent, a movement was given to the
acid which had never before been imparted to it in the manufacture
of hydrogen peroxide, because
"the liquid is thrown out toward the circumference of the vessel
at the
Page 132 U. S. 200
bottom, rises at the sides, returns to the center, and then
descends, to be again thrown out at the bottom, while at the same
time it is carried round and round,"
and says that this, "being reduced to still simpler language,
means that the machine will stir large quantities of the liquid
more thoroughly than the hand-worked paddles." It adds:
"The pretense that the complainant had discovered some occult
and wonder-working power in the motion of a screw revolving in the
bottom of a tub is not sustained by the proof. Whether the contents
of the tub be oxygenated water, or soap, or lye, or tartaric acid,
the action will be the same. That rotary, eddying motions in liquid
will result from the revolving screw, that the liquid will rise
highest at the periphery of the tub, and thus have the tendency at
the top to fall toward the center, were well understood operations
of centrifugal force. As every device, apparatus, formula, law of
nature, motion, and ingredient adopted by the complainant was old,
the patent must be held invalid unless it can be said that giving
to oxygenated water a well known rotary motion springs"
"from that intuitive faculty of the mind put forth in the search
of new results or new methods, creating what had not before
existed, or bringing to light what lay hidden from vision."
"
Hollister v. Benedict Manufacturing Co., 113 U. S.
59,
113 U. S. 72. No such faculty
has been tasked in giving form to this patent. There is here no
sufficient foundation upon which to rest a claim which, if
construed as broadly as the complainant insists it should be,
practically makes all pay tribute who stir the mixture in question
by machinery, and by hand also, provided substantially the same
movement can be produced by hand stirring, and this seems to be a
disputed question upon the proof. The complainant's claim to be
enrolled upon the list of inventors is based upon propositions too
theoretical and visionary for acceptance."
See also Dreyfus v. Searle, 124 U. S.
60;
Crescent Brewing Co. v. Gottfried,
128 U. S. 158.
A careful consideration of the evidence and of the arguments on
the part of the appellant (no brief having been submitted on the
part of the appellee) induces us to concur in the views of the
circuit court.
Decree affirmed.